The Complainant is Singpet Pte. Ltd., Singapore, represented by Morrison & Foerster, LLP, United States of America (“United States”).
The Respondent is Super Privacy Service LTD c/o Dynadot, United States, / Name Redacted. 1
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 13, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the three disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that English is the language of the registration agreements for each of the disputed domain names.
The Center sent an email communication to the Complainant on September 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 26, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 13, 2021, the Center received an email from the account identified by the Registrar as the email address for the registrant of the three disputed domain names. This email claimed that the sender was both the Complainant and the registrant and that its complaint was against the Registrar.
4. Factual BackgroundThe Complainant is an online retailer that specializes in pet products. It was established in Singapore in 2009 and, according to the Complaint, has been operating continuously since that time. From the dates indicated below, the Complainant has been using the three trademarks to market its products to customers all around the world including the United States of America, Canada, Europe, Australia, China and countries in southeast Asia.
According to the Complaint, in 2009 the Complainant adopted Singpet as its trademark and has been using it since then to provide online retail services in the field of pet products. In the past 12 months, the Complainant claims to have sold products by reference to “Singpet” to over 30,000 customers, generating revenues of over USD 10 million. The Complaint includes evidence that the Complainant first registered the domain name
The Complainant is the owner of Singapore Registered Trademark No. 40202006411W, SINGPET, for retail and other services in International Class 35. This trademark was registered on March 26, 2020.
In 2014, the Complainant began using the trademark Asia Pet World to provide a dropshipping service for other suppliers of pet products. According to the Complaint, the Complainant has been using the “Asia Pet World” trademark continuously since then. In the past 12 months, the Complainant claims to have had over 20,000 customers using its dropshipping services, generating revenues in excess of USD 10 million. The Complaint includes evidence that the Complainant first registered the domain name
In 2013, the Complainant adopted the trademark Our Pet World for use in connection with another online retail service for pet products. According to the Complaint, the Complainant has been using the Our Pet World trademark in connection with that business continuously since then. In the past 12 months, the Complainant claims to have had over 18,000 customers for the “Our Pet World” online store, generating revenues in excess of USD 1 million. The Complaint includes evidence that the Complainant first registered the domain name
The Complainant paid the renewal fees for the registration of:
(a)
(b)
In July 2021, however, the registrations of the three disputed domain name were transferred to a person who has provided the Registrar with an address in Ontario, Canada using the name of the Complainant’s chief executive officer.
According to the Complainant, these transfers were not effected with its permission and the registrant is not the Complainant’s chief executive officer. Instead, the Complainant says its systems were hacked and the disputed domain names transferred away from it before it discovered the hacking.
Between August 9, 2021 and September 6, 2021, the Complainant received a number of emails from “apwopwsp” using a ProtonMail Secure Email Account. By way of example, one of the emails on August 9, 2021, states:
“I track email show you read mail. [presumably referring to an email sent earlier that day]
“send 25 LTC crypto. I give one domain back.”
The next email later that day under the subject “your domains” stated:
“I hacked your domains
asiapetworld
ourpetworld
singp3t
“you move to amazon, I hack you. you move to google, I hack you.”
Another example is an email on August 17, 2021:
“are u wondering how i am doign it?
“why is zahid not abel to find how i get in ur network?
“will i strike again? In case u r wondering, I struck already today, he he..
“if u want peace if mind, it costs $s but less than the effort you are putting now and you get to sleep happily.
“want answers? reply...i can tall how i come to network, how i can see ur cameras in store, download ur everest customer list daily and save in my safe storage.
“ignoer me, loss sleep. peace doesnt cost much. just pay 1 month zahid salary ($4500) to me and u get all answres”.
As it was unable to prevent the transfers being effected, the Complainant has put in place protocols which redirect people looking for its former websites to alternative websites which the Complainant has set up.
At the time this decision is being prepared, it appears that the disputed domain names do not resolve to active websites.
5. Discussion and FindingsNo formal response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark for SINGPET identified in section 4 above.
Having regard to the global nature of the Internet and, in this case, the Complainant’s business, the fact that its trademark is registered in Singapore only does not preclude the Complainant from establishing the necessary rights under the Policy: WIPO Overview 3.0, section 1.1.2.
The Complainant does not claim registered trademarks for either “Asia Pet World” or “Our Pet World”. The Policy, however, is not restricted only to registered trademarks. Reliance may be placed on unregistered trademarks if the Complainant can show they have become distinctive of it or its goods or services. In this respect, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.3 explains the general position for establishing such rights:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
[…]
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The two further trademarks the Complainant asserts do have descriptive characteristics. On the other hand, they have been in use for a number of years. Moreover, the Complainant has had a not insignificant number of customers for each trade mark and generated substantial revenues, or at least not insignificant revenues, through their use.
In the circumstances of this case, the Panel considers that the Complainant has sufficiently demonstrated rights in both Asia Pet World and Our Pet World to qualify as unregistered trademarks for the purposes of the Policy.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
At least some of the use of the unregistered trademarks in evidence shows use of the trademark including a device element. It is usual, however, to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10.
Disregarding the gTLD, the disputed domain names consist of the Complainant’s trademarks. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the name the Respondent has provided to the Registrar. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
As discussed above, the Complainant further contends that the disputed domain names have been transferred away from it without its permission as result of a cybersecurity or hacking attack. The emails sent to the Complainant by “apwopwsp” provide convincing evidence in support of those allegations.
The Respondent has submitted an email claiming that he is also the Complainant. The Complaint is supported by a declaration by its chief executive officer amongst other things denying any involvement in the transfer of the disputed domain names away from the Complainant. He is also located in Singapore, not Ontario Canada.
The Respondent has not in terms denied the Complaint’s allegation that “apwopwsp” is in fact the Respondent.
Taking these matters into account together with the emails from “apwopwsp” claiming to have hacked into the Complainant’s systems and demanding money, the Panel does not accept the Respondent’s claim.
This kind of hacking attack, demanding payment with menaces, cannot qualify as a good faith offering of goods or services under the Policy. On the contrary, Panels have regularly held that use of a domain name for what appears to be illegal activity can never confer rights or legitimate interests under the Policy. See e.g. WIPO Overview 3.0, section 2.13.
As a result, the Complainant has established a strong prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd
WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As it appears that the Respondent hacked into the Complainant’s systems to transfer the disputed domain names away from the Complainant and followed up that transfer with demands for payment, there can be no doubt that the Respondent was well aware of the Complainant and its trademarks.
The registration of the disputed domain names in the false name adopted by the Respondent by hacking into the Complainant’s systems is an egregious case of registration in bad faith. The use of the disputed domain names as leverage to demand payment for their return is a clear case of use in bad faith. Even if one characterises the use as “passive use” of the disputed domain names themselves, it has long been established that is no bar to a finding of use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows
WIPO Case No. D2000-0003, another case in which the respondent gave false name and address details.
Accordingly, the Complainant has established all three requirements under the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names,
Warwick A. Rothnie
Sole Panelist
Date: November 9, 2021
1 The Respondent appears to have used the name of the Complainant’s Chief Executive Officer without his knowledge when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,
WIPO Case No. D2009-1788.